Wi-Lan Inc. v. LG Electronics, Inc.
1:10-cv-00432
| S.D.N.Y. | Mar 7, 2012Background
- Wi-Lan sues LG Electronics and LG Electronics U.S.A. for patent infringement asserting LG devices infringe claims 7–11 of the ’402 patent, titled “Method and Apparatus for Selectively Blocking Audio and Video Signals.”
- Claim 7 is the pivotal independent claim; disposition hinges on the construction of the term “informational scheme.”
- Magistrate Judge Peck issued an R&R construing “informational scheme” as a set of ratings information transmitted about a program that is not pre-programmed into the receiver, and recommended summary judgment for LG on infringement and for Wi-Lan on trademark-related claims.
- Wi-Lan objected to the R&R’s construction and LG did not object; the district court reviews de novo the claim construction and infringement analysis.
- The court adopts a modified construction of “informational scheme” and grants LG’s summary judgment on patent infringement, while dismissing Wi-Lan’s sanctions and granting Wi-Lan’s trademark-related summary judgment.
- The devices at issue (LG’s) are pre-programmed with ratings information (CEA-766) and a related system (RRT-1) that is a subset; the court finds no infringement because the informational schemes are not advanced-knowledge information.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Proper construction of 'informational scheme' | Wi-Lan argues for pre-configured information within the scheme. | LG argues only new, non-preprogrammed information can be in an informational scheme. | Informational scheme = first/second kind or set of kinds of ratings information with no advance knowledge |
| Infringement under the construed claim 7 | Wi-Lan contends LG devices infringe claim 7 if they can receive schemes not pre-programmed. | LG contends there is no infringement because devices have advance knowledge of the information they transmit. | No direct infringement under the proper construction |
| Doctrine of equivalents | Wi-Lan asserts the LG systems are equivalent to pre-programmed informational schemes. | LG contends the doctrine does not cover pre-programmed information for method claims. | Insufficient to establish infringement under the doctrine of equivalents |
| Sanctions | Wi-Lan seeks sanctions for alleged improper conduct and evidence deficiencies. | LG argues sanctions are unwarranted without proper evidentiary support. | Sanctions denied for Wi-Lan |
| Trademark infringement/false designation counterclaims | Wi-Lan seeks dismissal of LG’s counterclaims claiming logo-based confusion. | LG bears burden to show customer confusion; lack thereof defeats counterclaims. | Wi-Lan granted summary judgment dismissing trademark counterclaims |
Key Cases Cited
- AWH Corp. v. M/ C, 415 F.3d 1303 (Fed. Cir. 2005) (claim terms give ordinary meaning; intrinsic evidence first)
- NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282 (Fed. Cir. 2005) (direct infringement requires specific instances; not just capability)
- Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010) (trademark confusion and related standards)
- Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295 (Fed. Cir. 2007) (patent claim construction and intrinsic evidence emphasis)
- Planet Bingo, LLC v. Game Tech Int’l, Inc., 472 F.3d 1338 (Fed. Cir. 2006) (equivalence evaluation in patent disputes)